Bits and Bytes by Dennis Crouch

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

25 thoughts on “Bits and Bytes by Dennis Crouch

  1. 23

    A number of the provisions in the AIA require the PTO to act within certain amounts of time. For example, I believe the post-grant review and inter partes review proceedings are supposed to get to a certain point within 12 months (or 18 months with good cause).

    How long does anything take in current inter partes reexam proceedings? Certainly much longer than this. How can you expect the PTO to do something faster than it currently does, when you give it no additional resources plus lots of other duties?

    Is the PTO just going to ignore these provisions? That or it might have to shift resources away from normal patent examination over to reexaminations.

  2. 22

    That looks about right to me (skimmed it only … inventor not lawyer). Nothing limited to historical. I would only change your “any site-specific object that transmitted a signal” to “any site-specific beacon that transmitted location identification information” I read that the beacon transmits info that says ‘site X here’. One beacon is enough because the beacons are site specific. GPS is clearly called out as prior in the background. It is not really that narrow, just a lot narrower than the hype. Another possible example is smart carts in grocery aisles that get pings from RF tags that are fixed (but not those carts that triangulate based on N wifi access points).

  3. 21

    A cell tower is not a “site specific beacon” … unless, and this is a stretch, by chance the tower was built on a historical marker for a place of interest.

    Huh. I didn’t know that “beacons” were necessarily historical markers. I thought they could be any site-specific object that transmitted a signal (e.g. a lighthouse, a searchlight, foghorn).

    What passages in the specification or prosecution history makes you think that the term “beacon” is limited to objects on locations that have deemed (by you?) to be “historical”?

  4. 17

    We need a thread on the Akamai oral argument that took place Friday.

    The issues are simple. As interpreted by BMI, direct infringement of a method claim requires a single actor perform all the steps. Thus, direct infringement is avoided simply by not performing all the steps even if the “infringer” knows or induces another to perform the rest of the steps. Without direct infringement, there is no indirect infringement under 271(b) or (c). Thus there is a hole in the law that allows two “cooperating” parties to perform all steps of a method without any liability.

    In oral argument, on Friday, Akamai’s counsel argued that prior to 1952, case law generally supported the proposition that the cooperative performance of all the steps of a method claim was direct infringement. This extended to the situation where the one-party performed some of the steps with knowledge that the rest of the steps would be performed by an innocent party.

    Counsel also said that the Supreme Court had twice affirmed that Congress did not intend to change the law of direct infringement from its state prior to 1952 in enacting 271(a), even while it fully intended to clarify the law regarding contributory infringement in enacting 271(b) and (c).

    The alleged infringer’s counsel demurred, insisting that there was no hole in the law, and that the prior-to-1952 case law referred to by Akamai’s counsel was not to “direct infringement,” but to “contributory infringement.” He argued that Congress had codified contributory infringement law in 271(b) and (c). At a minimum the statutes required knowledge of infringement before there was liability induced. In contrast direct infringement was a strict liability statute that did not require prior knowledge of the patent.

  5. 15

    A cell tower is not a “site specific beacon” … unless, and this is a stretch, by chance the tower was built on a historical marker for a place of interest. I did a quick search for “site” and then “beacon” throughout the specification. My conclusion is: Deriving location from N cell towers (or satellites, or wifi access points, or something else) and using the derived location to retrieve information related to the derived location isn’t covered by this asset’s claims. But I think there are site specific beacon systems in use. “Now look out your left window where the Gettysburg battle casualties were the highest…”

  6. 14

    The limitation of significance is “site specific object is a beacon”. Like many patents at first glance … seems broader than it is. Doesn’t apply to location derived from …cell tower ….

    Why isn’t a cell tower a “beacon”?

  7. 13

    Sucks for our clients.
    Sucks for stiffs like you (whether or not you recognize why).
    Impact to my bottom line? – zilch.

  8. 12

    Oh well look at that:

    The bottom line is that the USPTO can spend up to $2.7 billion, assuming it collects that much in “fees and surcharges.”

  9. 11

    “Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. ”

    How do you guys like that tax on innovation?

  10. 10

    The limitation of significance is “site specific object is a beacon”. Like many patents at first glance … seems broader than it is. Doesn’t apply to location derived from GPS, Wifi, cell tower etc.

  11. 7

    Was the funding for the new positions in the new act or in some other way guaranteed?

    The short answer: no (although new spending mandates were).

    Cheer up patent community, the Office has the authority to set fees to meet their budget in the gross.

    Yes, I know that if that budget is slashed, the Congress will lick their chops at the excess of collections as free money (still).

  12. 6

    I expect absolutely NOTHING from Congress except that fee diversion will continue and PTO funding will remain inadequate for the forseeable future.

  13. 5

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  14. 4

    There were a lot of vacancy announcements recently for new patent examiners, board members, etc. Was the funding for the new positions in the new act or in some other way guaranteed? Or will they now have a hiring freeze and the backlog will just continue to grow?

  15. 2

    In somewhat related news:

    link to cnn.com

    The third major patent that rolled through the USPTO this week was innovative back when it was first filed by Xerox in 1998. The patent involves location-based services, and could potentially be another tool Apple could use to crush other mobile competition (or at least get them to pony up some royalties).

    Apple acquired this patent in 2009 from Xerox, and on Tuesday the patent was reissued. The patent predates the mobile app revolution, and even the rise of major social networks, and is worded uncomfortably broadly.

    Here’s the bulk of what it says:

    “A location information system that displays location specific information, the location information system, comprising: a receiver that receives location identification information from at least one site specific object identifying a location.Iadd., where the at least one site specific object is a beacon.Iaddend.; and a transceiver that transmits the location identification information to a distributed network and that receives the location specific information about the specified location from the distributed network based on the location identification information, wherein the location specific information provides information corresponding to the location.”

    Yes, patentese is an obtuse dialect, but if you could decipher any of the above, you’ll know the patent describes what tons of apps and mobile devices already do on a near constant basis. Apple could, theoretically, start pursuing companies like Foursquare or Facebook for performing location-based services that fall under the patent’s very wide umbrella.

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